Patents

Indian Patent Law is compliant with the TRIPS Agreement and at par with Patent Laws internationally. The (Indian) Patents Act, 1970, governs the law of patents in India. It is important to note that in the year 2005 (Indian) Patents Act, 1970, underwent a major change to meet the requirements of the TRIPS Agreement, and one of important aspect of the aforesaid amendment was the introduction of the “Product” Patent in India.

An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under Section 3 and 4 of the (Indian) Patents Act, 1970. Section 3 & 4 of the Patents Act, 1970 enumerates various inventions which are not patentable in India.

In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee. However, the legal representative of any deceased person can also make an application for grant of patent.

The Indian Patent office publishes a journal, known as “The Patent Office Journal” and is freely available on Indian Patent Office website[1]. The website also provides the status of the pending applications, and facilitate search of the published and granted patents by the Indian Patent office[2].

Procedure for Grant of Patent in India

After filing the application for the grant of patent, a request for examination is required to be made for examination of the application by the Indian Patent Office. After the First Examination Report is issued, the Applicant is given an opportunity to meet the objections raised in the report. The Applicant has to comply with the requirements within 12 months from the issuance of the First Examination Report[3]. If the requirements of the first examination report are not complied with within the prescribed period of 12 months, then the application is treated to have been abandoned by the applicant. After the removal of objections and compliance of requirements, the patent is granted and notified in the Patent Office Journal. However, before the grant of patent and after the publication of application, any person can make a representation by way of pre-grant opposition. It is pertinent to mention that a post-grant opposition can also be filed by any person interested, within a period of one year from the date of grant of the patent. Some of the grounds for filing of pre and post grant opposition are prior art, patent being wrongly granted, prior publication, prior public use, obviousness, lack of inventive step, failure to disclose the source or geographical origin of biological material used for the invention and anticipation etc.

Filing of Application for Grant of Patent in India by Foreigners

Since, both India and Norway are signatories to the Paris Convention for the Protection of Industrial Property, 1883 and the Patent Cooperation Treaty (PCT), 1970[4] Norwegian entities can adopt any of the aforesaid routes for filing of application for grant of patent in India.

An international application known as PCT application[5] can be filed in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International application.

Where an application for grant of patent in respect of an invention in a Convention Country has been filed, then similar application can also be filed in India for grant of patent by such applicant or the legal representative or assignee of such person within twelve months from the date on which the basic application was made in the Convention Country i.e. the home country. The priority date in such a case is considered as the date of making of the basic application.

Term of Patent

Term of patent in India is 20 years from the date of filing of patent application. It is important to note that a patentee has to renew the patent every year by paying the renewal fee which can be paid every year or in lump sum.

Rights Granted by Patent

If the grant of the patent is for a product, then the patentee has a right to prevent others from making, using, offering for sale, selling or importing the patented product in India.

If the patent is for a process, then the patentee hasthe right to prevent others from using the process, using the product directly obtained by the process, offering for sale, selling or importing the product in India directly obtained by the process.

Before filing an application for grant of patent in India, it is important to note “What is not Patentable in India?”. Following i.e. an invention which is (a) frivolous, (b) obvious, (c) contrary to well established natural laws, (d) contrary to law, (e) morality, (f) injurious to public health, (g) a mere discovery of a scientific principle, (h) the formulation of an abstract theory, (i) a mere discovery of any new property or new use for a known substance or process, machine or apparatus, (j) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance, (k) a mere arrangement or rearrangement or duplication of known devices, (l) a method of agriculture or horticulture and (m) inventions relating to atomic energy are not patentable in India.

Compulsory Licenses

One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent subject to the fulfillment of certain conditions. At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller of Patents for grant of compulsory license of the patent, subject to the fulfillment of following conditions, i.e.

the reasonable requirements of the public with respect to the patented invention have not been satisfied; or

that the patented invention is not available to the public at a reasonable price; or

that the patented invention is not commercially used or put to industrial application in India within three years from the date of grant of patent.

It is further important to note that an application for compulsory licensing may be made by any person notwithstanding that he is already the holder of a license under the patent.

However, before the grant of a compulsory license, the controller of Patents shall take into account following factors:

The nature of invention;

The time elapsed, since the sealing of the patent;

The measures already taken by the patentee or the licensee to make full use of the invention;

The ability of the applicant to work the invention to the public advantage;

The capacity of the applicant to undertake the risk in providing capital and working the invention, if the application for compulsory license is granted;

As to the fact whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions;

National emergency or other circumstances of extreme urgency;

Public non-commercial use;

Establishment of a ground of anti-competitive practices adopted by the patentee.

The grant of compulsory license cannot be claimed as a matter of right, as the same is subject to the fulfillment of above conditions and discretion of the Controller of Patents. Further judicial recourse is available against any arbitrary or illegal order of the Controller of Patents for grant of compulsory license.